Microsoft Corporation v. ygug
Claim Number: FA0607000755419
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is ygug (“Respondent”), jiron tumbes, lima, lima li 2212655 Peru.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <secretosdelmsn.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2006.
On July 20, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <secretosdelmsn.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 14, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@secretosdelmsn.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <secretosdelmsn.com> domain name is confusingly similar to Complainant’s MSN mark.
2. Respondent does not have any rights or legitimate interests in the <secretosdelmsn.com> domain name.
3. Respondent registered and used the <secretosdelmsn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured, marketed and sold computer software and related products and services since 1975. Additionally, Complainant provides a news and information network known as the Microsoft Network, or MSN in its abbreviated form. Within its online network, Complainant offers e-mail services, search services and instant messaging services. In connection the operation of its online network, Complainant holds a trademark registration for the MSN mark (Reg. No. 2,153,763 issued April 25, 1998) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <secretosdelmsn.com> domain name on March 15, 2006. The domain name resolves to a website with Spanish content that makes numerous references to Complainant’s products, offers a false log in screen to Complainant’s online network and purports to provide software that allows consumers to access secret versions of Complainant’s software.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has obtained rights to the MSN mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant alleges that the disputed domain name is confusingly similar to its MSN mark. The <secretosdelmsn.com> domain name contains Complainant’s MSN mark in its entirety and adds the Spanish terms “secretos” and “del,” which translates to the phrase “secrets of.” The Panel finds that the addition of generic Spanish terms to Complainant’s mark is insufficient to differentiate the disputed domain name from the Complainant’s registered mark. See Am. Online, Inc. v. Villanueva, FA 236589 (Nat. Arb. Forum Apr. 2, 2004) (finding the addition of generic French and Spanish words to be insufficient to distinguish the disputed domain names from the mark); see also Microsoft Corp. v. Marine Safety Network Weather, FA 655480 (the addition of common, descriptive term and a generic top-level domain failed to negate the confusing similarity between the disputed domain name and the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial
burden to establish a prima facie case that Respondent does not have
rights or legitimate interests in the disputed domain name. Once Complainant establishes such a prima
facie case, the burden shifts to Respondent to affirmatively prove that it
does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”); see
also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”).
Respondent failed to submit a Response in this dispute. Such a failure to Respond creates a presumption that Respondent does not have rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). However, the Panel chooses to evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The domain name resolves to a website
with Spanish content that makes numerous references to Complainant’s products,
offers a false log-in screen to Complainant’s online network and purports to
provide software that allows consumers to access secret versions of
Complainant’s software. The Panel finds
that Respondent’s use of the disputed domain name to divert Internet users to
its website that provides unauthorized services relating to Complainant’s
online network neither amounts to a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial fair use
pursuant to Policy ¶ 4(c)(iii). See
Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona
fide offering of goods or services where the respondent used the
complainant’s mark without authorization to attract Internet users to its
website, which offered both the complainant’s products and those of the
complainant’s competitors); Hewlett-Packard Co. v.
Inversiones HP Milenium C.A., FA 105775
(Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar
domain name [<hpmilenium.com>] to sell counterfeit versions of
Complainant’s [HP] products is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i).”).
The WHOIS registry shows the registrant of the disputed domain name to be “ygug” or “jiron tumbes.” Because there is no other evidence in the record to suggest otherwise, the Panel must conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Complainant alleges that Respondent has registered and used
the disputed domain name in bad faith.
The disputed domain name, by virtue of its confusingly similar nature,
is likely to cause confusion as to Complainant’s affiliation with or
sponsorship of the resulting website.
Additionally, Respondent offers sponsored links to third-party websites
from which it presumably receives referral or click-through fees. Accordingly, the Panel finds that
Respondent’s use of the confusingly domain name to redirect Internet users to
its own website for commercial gain evidences bad faith under the light of
Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent
registered and used the <my-seasons.com> domain name in bad faith
pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain
name that is confusingly similar to the MYSEASONS mark for commercial benefit
by diverting Internet users to the <thumbgreen.com> website, which sells
competing goods and services.”).
Furthermore, the confusingly similar domain name diverts Internet users to Respondent’s website where a log in service for Complainant’s network is offered. Complainant presents an uncontested assertion that the purported log in service is part of a scheme to obtain username and password information from confused consumers. The Panel finds that the use of a confusingly similar domain name to put forth a log-in form that purportedly captures login information from confused users of Complainant evidences bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 602221 (Nat. Arb. Forum Jan. 16, 2006) (finding bad faith where the respondent used the confusingly similar domain name to resolve to a website that closely resembled the complainant’s website in order to deceive Internet users to provide their personal information); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use as a result of the respondent using the confusingly similar domain name to divert Internet users to its website that imitated the complainant’s website to fraudulently acquire personal information from complainant’s clients).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <secretosdelmsn.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 1, 2006
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